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Kelly-Brown, et al. v. Winfrey, et al.

Kelly-Brown, et al. v. Winfrey, et al.

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Categories:Types, Business/Law
Published by: Ilya on Jul 06, 2013
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10/01/2013

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1
12-1207-cv
 Kelly-Brown, et al. v. Winfrey, et al.
1UNITED STATES COURT OF APPEALS
 
2For the Second Circuit3 _______________________________ 45August Term, 201267(Argued: September 25, 2012 Decided: May 31, 2013)89Docket No. 12-1207-cv10 _______________________________ 1112S
IMONE
ELLY
-B
ROWN
and O
WN
Y
OUR 
P
OWER 
C
OMMUNICATIONS
,
 
I
 NC
.,
 
1314
 Plaintiffs-Appellants
,1516
 — 
v.
 — 
 1718O
PRAH
W
INFREY
,
 
H
ARPO
P
RODUCTIONS
,
 
I
 NC
.,
 
H
ARPO
,
 
I
 NC
.,
 
H
EARST
C
ORPORATION
,
 
H
EARST
19C
OMMUNICATIONS
,
 
I
 NC
.,
 
W
ELLS
F
ARGO
&
 
C
O
.,
 
E
STEE
L
AUDER 
C
OMPANIES
,
 
I
 NC
.,
 
C
LINIQUE
20L
ABORATORIES
,
 
LLC,
 
C
HICO
S
FAS,
 
I
 NC
.,
 
ABC
 
C
OMPANIES
(1-100),
 
and J
OHN
D
OES
(1-100),2122
 Defendants-Appellees
.23 _______________________________ 2425Before:
 
S
TRAUB
, S
ACK 
and C
HIN
,
 
Circuit Judges
.26 _______________________________ 27On appeal from judgment entered pursuant to an Order dated March 6, 2012 by the28United States District Court for the Southern District of New York (Paul A. Crotty,
 Judge
)29granting Defendants-
Appellees’ motion to dismiss.
Plaintiff is the owner of a motivational30
services business named “Own Your Power 
Communications, Inc.,
and has a registered service31
mark in “Own Your Power.” Defendants published a magazine cover, hosted an event, and built
32a section of a website all utilizing the phrase
“Own Your Power.” Plaintiff 
s bring suit alleging33trademark infringement under the Lanham Act. The District Court held that the defendants
use34
of the phrase “Own Your Power” constituted fair use and also held that plaintiffs’
claims failed35 because she failed to meet the threshold requirement of showing use as a mark. We disagree36
with the District Court’s holding that the defendants have demonstrated fair use and also with its
37holding that plaintiffs are required to make a threshold showing
that defendants’
use
d “Own
38
Your Power”
as a mark in order to state a claim for trademark infringement. We therefore39
VACATE
the judgment of the District Court with respect to plaintiffs
trademark infringement,40false designation of origin, and reverse confusion claims and
REMAND
for further proceedings41not inconsistent with this opinion. The District Court granted defendan
ts’ motion to dismiss
42 plaintiffs
counterfeiting, vicarious infringement, and contributory infringement claims on43separate grounds, and we
AFFIRM
with respect to these claims.44
 
21Judge S
ACK 
concurs in the result in a separate opinion.23 _________________________________ 45P
ATRICIA
L
AWRENCE
-K 
OLARAS
,
 
The PLK Law Group, P.C., Hillsborough, NJ,
 for 
 6
 Plaintiffs-Appellants
.78J
ONATHAN
R.
 
D
ONNELLAN
(Ravi V. Sitwala, Debra S. Weaver,
on the brief 
), The Hearst9Corporation, New York, NY, Charles L. Babcock, Jackson Walker L.L.P.,10Houston, TX,
 for Defendants-Appellees
.11 _________________________________ 12S
TRAUB
,
Circuit Judge
:13Plaintiff Simone Kelly-
Brown (“Kelly
-
Brown”) is the owner of a motivational services
14 business, Own Your Power Communications, Inc., that holds events and puts out publications15under the registered service
mark “Own Your Power.” Defendants Oprah Winfrey (“Oprah”),
16Harpo, Inc., and Harpo Productions, Inc. (collectively,
“Harpo”), and Hearst Corp. and Hearst
17Communications, Inc. (collectively,
“Hearst”) were involved in the production of a magazine,
18event, and website also employing the phrase
“Own Your Power.” Kelly
-Brown argues that in19so using the phrase, the defendants infringed upon her mark. She brings suit for claims including20trademark infringement, false designation of origin, reverse confusion, and counterfeiting. She21also brings suit for vicarious and contributory infringement
against Wells Fargo & Co. (“Wells
22
Fargo”), Clinique Laboratories, LLC (“Clinique”), Estee Lauder Cos., Inc. (“Estee Lauder”), and
23
Chico’s FAS, Inc. (“Chico’s”),
which were all corporate sponsors of the allegedly infringing24
“Own Your Power” e
vent.25Kelly-Brown appeals from the grant of a motion to dismiss in the Southern District of 26 New York (Paul A. Crotty,
 Judge
), finding that the defendants’ use of the phrase “Own Your 
27
Power” was fair use.
The District Court dismissed Kelly-
Brown’s counterfeiting, vicarious
28infringement, and contributory infringement claims on additional grounds. Because we find that29
 
3the defendants have not adequately established a fair use defense, we
VACATE
the judgment of 1the District Court with respect to Kelly-
Brown’s trademark infringement, false designation of 
2origin, and reverse confusion claims and
REMAND
this case for further proceedings not3
inconsistent with this opinion. We agree with the District Court’s holdings with respect to
Kelly-4
Brown’s vicarious infringement, contributory infringement, and counterfeiting claims and
5therefore
AFFIRM
with respect to these claims.6
BACKGROUND
7The allegations recited below are taken from the complaint, and we assume they are true8for the purposes of this appeal.9Kelly-
Brown owns a motivational services business organized around the concept “Own
10Your Power.
Kelly-Brown hosts a radio show, holds conferences and retreats, and writes a blog11 promoting the concept of 
“o
wn
ing”
 
one’s
power. She also has a federally registered service12
mark in the phrase “Own Your Power.”
 13The service mark 
 
registered with the United States Patent and Trademark Office is14displayed in a distinctive font that Kelly-Brown uses on her website and other materials, as15follows:
1
 1617The service mark 
states, “THE COLOR(S) LIGHT BLUE IS/ARE CLAIMED AS A FEATURE
18OF THE MARK. THE MARK CONSISTS OF LIGHT BLUE SCRIPTED LETTERS WHICH19
CREATE THE WORDS OWN YOUR ‘POWER.’”
Kelly-
Brown’s
service mark was registered20May 27, 2008.
 
21
1
The images discussed in this opinion are also available online athttp://www.ca2.uscourts.gov/Docs/Video_files/12_1207/Kelly-Brown_images.pdf 

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